CHAPTER 10.1 Defensive Publishing and the Public Domain saRa boeTTigeR, Senior Advisor, PIPRA and Chief Economist, M-Cam, Inc., U.S.A. cecilia chi-haM, Director, Biotechnology Resources, PIPRA, U.S.A. ABSTRACT negative effects. For instance, when research tools IP (intellectual property) rights can reward innovators and or enabling technologies are patented and not encourage investment in developing new products and available for licensing, the creative and collabora- services. However, the exclusionary power of IP rights can sometimes have negative effects, making technologies less tive process of innovation can potentially be im- accessible and, thereby, potentially impeding innovation. peded. To ensure the balance between access and To make informed decisions about how to balance ac- protection requires an understanding of both the cess and protection requires an understanding of both the traditional IP rights system (patents, copyrights, traditional IP rights system (patents, copyrights, trade- marks, and trade secrets) and alternative mechanisms for trademarks, and trade secrets) and alternative preserving access to technologies. This chapter provides concepts, such as defensive publishing, public a brief introduction to the public domain and defensive domain, and open source. publishing and examines issues concerning the choice be- Debates about IP policy and the need to seek hind the choice of whether to publicly disclose or to pat- a socially optimal balance between IP rights and ent an innovation. Discussing the strategic use of defen- sive publishing in IP management, the chapter considers the public domain are important for the pursuit both the utility of defensive publishing and its limitations of vibrant national and international innovation for supporting broad innovation. After an examination of systems. This chapter’s focus, however, is narrow- the public domain and how it relates to other open-ac- er. Rather than examining how policies regard- cess concepts, such as open source and the commons, the chapter focuses on the practical considerations involved ing the public domain might support innovation, when using public-domain technologies and defensive we look instead at how, given current IP laws, IP publishing to manage intellectual property. management practitioners can best use the public domain to support particular goals. The term public domain describes a body of work that is freely available, legally unprotected, 1. Introduction and not subject to individual ownership. Public A well-functioning innovation system strikes a domain implies the absence of individual IP rights. balance between protecting technologies and pre- This definition exemplifies the language associat- serving access to them. IP (intellectual property) ed with the public domain and what remains after rights can provide incentives that reward innova- all the boundaries of IP rights have been staked. tors and encourage investment in the develop- Likewise, we commonly refer to a technology ment of new products and services. However, falling into the public domain, as if there were the exclusionary power of IP rights can also have never a conscious decision to place something in Boettiger S and C Chi-Ham. 2007. Defensive Publishing and the Public Domain. In Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Ox- ford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org. © 2007. S Boettiger and C Chi-Ham. Sharing the Art of IP Management: Photocopying and distribution through the Inter- net for noncommercial purposes is permitted and encouraged. HANDBOOK OF BEST PRACTICES | 879 BOETTIGER & CHI-HAM the public domain; instead, the public domain In recent decades, many authors have exam- encompasses the residuals of the processes of the ined how innovation systems have been changing IP rights system. This chapter, however, does not in response to the expanding system of IP rights. view the public domain as simply a default for As IP rights have become stronger, broader, and technologies that are not claimed via IP rights. more far-reaching, many technologies that might Instead, the chapter aims to promote a broader previously have been freely accessible in the pub- appreciation of the public domain as a valu- lic domain are now proprietarily owned. This able resource. The authors seek to facilitate the phenomenon has been particularly noticeable in discerning use of the public domain as a tool the fields of health and agriculture. (among a set of tools that include traditional IP In 1980, a landmark U.S. Supreme Court rights and related licensing mechanisms) of pru- decision (Diamond v. Chakrabarty)2 set the stage dent IP management. for a burgeoning biotechnology industry and an Section 2 provides background that illus- exponential rise in the number of life-science pat- trates the importance of the public domain and ents. Allowing for the patenting of human-made how it has changed in recent decades. Section microorganisms, the decision clarified the Court’s 3 briefly introduces two other open-access con- position that patentability did not depend on the cepts—the commons and open source—in order distinction between living and inanimate things, to distinguish three alternatives from one other but instead between inventions made by “man” and defines their relation to the IP rights system. and those that exist naturally. Among other influ- Section 4 uses a narrower, legalistic definition of ences to increased patenting during this period, the public domain to discuss the practical impli- the Bayh-Dole Act of 1980 has played a role. It cations surrounding public domain technologies. set up new rules for the interface between aca- That section reviews the patent-law concepts nec- demia, in which publications are the currency of essary for understanding both the construction the trade, and the commercialization of universi- of a successful defensive publication, how to as- ty research through patenting and licensing.3 The certain whether a technology is, in a legal sense, rise in the patenting of life-science technologies part of the public domain. Section 5 introduces and the corresponding reduction in the number the practice of defensive publishing, examining of technologies remaining in the public domain how best to place innovations into the public do- has been most remarkable in developed countries. main. Section 6 considers potential strategies for Still, in many developing countries, patenting re- the IP manager choosing between patenting and mains sparse.4 Indeed, despite the strengthening defensive publishing. Section 7 outlines practi- of IP rights policies worldwide through TRIPS cal issues confronted by users of public domain (the Agreement on Trade-Related Aspects of technologies. Intellectual Property Rights) and TRIPS-plus, in- ternational disparities in patenting behavior are likely to persist. Understanding these differences 2. Innovation And the public doMAIn can be important for understanding how best to “There is no area in which public concern about in- use the public domain. tellectual property and the public domain has been Substantial differences in patenting behavior greater than in scientific and technical research. can also be found between the public and private Whether it is the controversy over the patenting of, sectors within a country. Public sector patenting and access to, the humane genome or pluripotent behavior and the use of the public domain may stem cell lines, the appropriate role of intellectual be influenced by culture (for example, the land- property in university research, or the use of ethno- grant universities in the United States, the cen- botany and traditional herbal knowledge in phar- ters of the Consultative Group on International maceutical patenting, the coexistence of science and Agricultural Research, (CGIAR), and many other property rights has been a fairly constant concern public sector agricultural research institutions over the last 15 years.” –James Boyle1 worldwide have a strong history of contributions 880 | HANDBOOK OF BEST PRACTICES CHAPTER 10.1 to the public domain), a lack of resources relative domain if one can make, use, offer for sale, sell, or to the private sector, and institutional structures import the invention without infringing an active that often are designed to accommodate differ- patent and if there are no other types of IP rights ent goals. Although there clearly are exceptions, that lay claim to the invention. Technologies in public sector institutions and individual research- the public domain can be used with impunity be- ers are generally at a disadvantage when it comes cause, by definition, there is an absence of owner- to strategically employing the patent system to ship and therefore free access. This description of achieve their research and development goals. In the public domain as a distinct set of technologies these instances, the public domain can be a cru- with a defined boundary, though, is misleading. cial resource. In fact, the boundary between the two sets can This chapter does not consider whether the be difficult to discern, can vary from country to shift in the relative strength of the public domain country, and is continually shifting. It is no sim- in the life sciences is disadvantageous, and, if so, ple task to ascertain whether or not a technology to whom. Such complex issues have been consid- is in the public